Search.Accessibility.Help.Sitemap.Contact|Deutsch.English.Français

• Patents
• About us
• Topics

---

---

Promotion

---

---

The case for and against the introduction of a grace period in European patent law

Background

 

The Intergovernmental Conference of the member states of the European Patent Organisation on the reform of the patent system in Europe (Paris, 24 to 25 June 1999) adopted, among other things, a mandate which reads as follows:

"4 - Effects of disclosures

The Intergovernmental Conference,

considering that research institutes, universities and certain firms wish to be able to file patent applications while at the same time being obliged to practise certain forms of disclosure,

considering that modern means of communication such as the Internet increase the risk that the results of research might be disclosed involuntarily,

considering that, both in Europe and in other countries worldwide, these disclosures prevent inventors from obtaining patent protection for their inventions,

mandates the Organisation to examine under what conditions the effects of disclosures prior to filing could be taken into account in European patent law."

In pursuance of this mandate the Administrative Council of the European Patent Organisation in turn mandated the completion of two expert opinions from Mr Jan Galama and Professor Dr Joseph Straus on the case for and against a so-called "grace period", protecting an inventor from a disclosure of his invention prior to the filing of a patent application. These opinions have now been completed and submitted to the Administrative Council.

The Administrative Council and the European Patent Office share the view that these two studies should be brought to the attention of the interested public in order to stimulate the ongoing debate on this controversial issue and to provide a basis for a broad public consultation at European and national level.

A summary as well as the full text of the expert opinions are reproduced below.

• Full text version of Mr. Galama's opinion [PDF 90 KB]
• Full text version of Dr. Straus' opinion [PDF 272 KB]

---

Summary of Mr Galama's opinion

The thrust of Mr Galama's opinion is that the introduction of a grace period into European patent law would be detrimental and should not be supported because it would reduce legal certainty for third parties and may confuse individual inventors giving them a false sense of security. Global high-speed communication through the Internet, the growing economic significance of patents and worldwide competition require a clear-cut patent system on which every one can and must rely. Personal inventors would be most at risk from a grace period in that third parties may derive intervening rights from an early disclosure. This would effectively diminish the inventor's rights especially in highly competitive fields such as information technology and biotechnology. If academics wish to compete in the economic world they should be prepared to relinquish old habits, such as early publication.

• The introduction of a general grace period by revision of the EPC would put European inventors in a disadvantageous position because there would be no guarantee of reciprocity from other countries.
• The introduction of a grace period within the context of an international treaty without substantive patent law harmonisation would still leave the problem, encountered during the negotiations on the "old" Patent Law Treaty in the early 1990's that, due to the peculiarities of the US "first-to-invent" system, the US understanding of the notion of grace period is not the same as in Europe. In particular the issue of prior user rights and European insistence that disclosures during the grace period should not be understood as creating a priority date may prove "impossible" to reconcile with the US position.
• The introduction of a grace period as part of broad international harmonisation of patent law remains somewhat hypothetical given that the US show no willingness to abandon the first-to-invent system, and even if it did, it is likely that in any negotiations elements of the first-to-invent system would be retained, threatening to "compromise" the integrity of the clear and well functioning first-to-file system.
• Mr Galama concludes that even if the US were willing to move on first-to-invent, this would not be sufficient reason to adopt a grace period due to the uncertainties and likely misconceptions involved.

As an alternative to a grace period Mr Galama suggests six possible courses of action:

(i) Extend use of "provisional applications" to allow for an early filing date and allow the applicant to disclose the invention even if time does not permit the filing of a "fully worked out" application, Article 5 of the Patent Law Treaty 2000 contains such a proposal and should be supported by the EPO.

(ii) Extend the notion of "evident abuse" in Article 55(1)(a) EPC which is currently too narrow to be of much practical benefit to inventors. Consider covering "unintentional" disclosures within this provision.

(iii) Enlarge the list of recognised international exhibitions under Article 55 (1)(b)EPC.

(iv) Take action to improve general patent awareness.

(v) Target potential inventors and improve the teaching of technology courses at university so that they have more IP content.

(vi) Increase the number of patent professionals/IP experts in Europe and tailor more post graduate courses specifically with the needs of IP professionals in mind.

---

Summary of Professor Straus' opinion

Professor Straus argues that the introduction of a general grace period into European patent law is desirable since some form of grace period is currently provided for in the patent laws of thirty eight countries worldwide including three countries, Estonia, Romania and Slovenia which may join the EPO in 2002. The absence of such provision in Europe could have negative economic consequences including the shifting of investment and technological development out of Europe to countries where pre-filing disclosures are not necessarily prejudicial to patent filing.

• Both the United Kingdom and Germany previously recognised a grace period in their patent laws and this did not give rise to any difficulty. Neither does experience in jurisdictions such as Canada and Japan suggest that such a provision gives rise to problems and it is primarily used as a "safety net".
• Even existing European patent law cannot guarantee absolute legal certainty. In patent grant proceedings account has to be taken of oral disclosures and public use in determining the state of the art. The situation will become more difficult with the increased use of the Internet. Legal certainty is therefore a relative concept and does not depend upon the existence or otherwise of a grace period.
• Furthermore, third parties already have to cope with some degree of uncertainty. Patent applications are not published until eighteen months from the priority date and even then it is not clear until the grant procedure has finished what exactly the nature of the exclusive rights claimed will be.
• Account has to be taken of the growing significance of academic and research institutes as patent applicants and generators of innovation relevant knowledge. There is a need to facilitate early publication of research results. Disclosure in parallel to or only after filing a patent application does not entirely meet this need since it is not always feasible to file a patent application at an early stage and in any event the absolute bar on filing for previously disclosed inventions is disproportionate to any inadvertence on the part of the inventor. It is not only inventors which suffer whenever a useful invention is excluded from patent protection but society at large. Statistics from Japan, US and Germany make clear that early disclosure is of particular importance for academic/research institutions and independent inventors and the needs of this sector should be given more recognition in Europe. However, statistics from Japan, where the grace period has to be invoked, also clearly reveal its importance for large industry: 47% of applications invoking grace period in 1999 were filed by large companies.
• Provisional applications do not offer a satisfactory remedy because they do not address inadvertent disclosures at all and even in other cases they pose a risk that the original disclosure will prove inadequate as a basis for any subsequent application.

Professor Straus makes five specific recommendations:

(i) The EPC contracting states should join the already significant group of states whose patent laws already provide for a general grace period and which all, with the exception of the United States of America, apply the first-to-file system.

(ii) The grace period should cover all forms of pre-filing disclosures by the applicant/inventor or his predecessor in title.

(iii) Whether a grace period of twelve or six months is to be adopted, should be considered with a view to possible international harmonisation.

(iv) In principle, the grace period should precede the Paris Convention priority date. However, this issue too may be viewed under the aspect of possible international harmonisation.

(v) In principle, the invoking of the grace period should not be made dependent on any time limits or formalities, since they may seriously diminish its effects. However, should considerations of legal certainty lead to a compellingly different result, a system comparable to that applied in Japan and some other states may offer an acceptable alternative.

---